Editors Note: Caroline Horton Rockafellow is a member of the Research Triangle Park law firm of Daniels Daniels & Verdonik, P.A. TechLaw is a regular feature in WRAL Local Tech Wire.
_______________________________________________________________________________________Last week, the United States Supreme Court declined to hear Psihoyos, v. National Geographic Enterprises, a dispute between National Geographic Magazine and several of its freelance writers and photographers.

The dispute involved claims by certain writers and photographers that a 1997 CD-ROM compilation of 108 years of National Geographic Magazines infringed the copyright of works previously included in the hard copy version of the National Geographic Magazine. The writers and photographers argued that the electronic distribution of such works was an infringement of the original copyright and should entitle the writers and photographers to additional compensation.

The lower Appeals Court in the 2nd Circuit (New York, Connecticut, Rhode Island, and Vermont) found that the CD-ROMs were an electronic replica of the original magazines and thus a permissible revision under copyright.

Some might believe that by refusing to hear this case, the Supreme Court tacitly agreed that electronic reproduction of compilations by their original publishers is a permissible reproduction. Unfortunately, this would be an incorrect conclusion, and the fact that the Supreme Court failed to take this case does not explicitly demonstrate the Court’s support of this ruling by the 2nd Circuit. In fact, the Appeals Court in the 11th Circuit (Georgia, Florida, Alabama) had earlier held in Greenberg v. National Geographic Society, a case argued under the same facts as Psihoyos, that the National Geographic’s use of photographs in the CD-ROM compilation constituted a new product in a new medium and was therefore a copyright infringement.

Thus, the failure of the Supreme Court to hear the Psihoyos case was a loss for both sides and means that there is no clear cut rule regarding the digitization of composition works.


Under copyright law, a copyright holder has the exclusive right to reproduce, distribute, perform and display the copyright work as well as to prepare derivative works based on the copyright work. Freelance writer and photographers will often provide their works under a license to reproduce and distribute the work for a particular purpose. More recently, that grant of rights has become more specific with respect to the licensed medium. For example, if an author grants a publisher the right to reproduce and distribute a manuscript, that does not grant the publisher the right to then go and create a motion picture based on that manuscript, unless, of course, the author has granted the publisher unrestricted rights in the manuscript or has assigned the copyright to the publisher.

Freelancers tend to be relatively sophisticated when it comes to the grant of rights in and to their work. As this is a critical revenue stream for most freelancers, they are focused on creating the most value for each piece of work. Granting overly broad rights to any publisher of their work would necessarily restrict the potential revenue stream from such work and limit avenues for distribution of that work. It is well established law that under the copyright act, it is permissible for the owner of a collective work (a work that encompasses the work of several different authors) to reproduce an exact facsimile of the complete collective work. What the National Geographic cases were asking the courts to determine was whether reproducing multiple issues of a magazine into a single CD with new graphical content was indeed a permissible reproduction of a compilation.

The National Geographic Cases

Greenberg v. National Geographic Society involved a case of a photographer who had provided photographs to the National Geographic over a 30 year period. Greenberg’s legal action was in part based on the fact that National Geographic used one of his pictures as a cover image on the CD-ROM. This cover image was displayed in a moving sequence, clearly not the same as the original image included in the magazine. Greenberg argued that the National Geographic’s reuse of his photographs was an infringement as the magazine did not have the right to control electronic rights in his photographs. The district court held that the CD-ROM was a permitted revision of a prior collective work. However, on appeal to the Eleventh Circuit Court, the lower court decision was reversed and the Appeals Court held that the CD-ROM was a new product for which the magazine had not secured the electronic rights to the photographs. Accordingly, this court held that publication in the CD-ROM did constitute copyright infringement.

Psihoyos v. National Geographic Enterprises involved three lower court cases from the Second Circuit. All three cases relied on the argument that collective works that are reproduced in digital facsimiles are not changed by the conversion from paper to electronic media and are thus not an infringement of the underlying copyright. The Court agreed that conversion to the CD-ROM was a permissible revision under copyright law, even though additional copyrightable materials were included, such that it was not an exact reproduction.

What Does This Mean?

All of the National Geographic cases were based on almost identical fact patterns and similar arguments, yet one Circuit Court found the actions to constitute copyright infringement and another did not. It is unfortunate that the Supreme Court did not elect to hear at least one of these cases. With the proliferation of new electronic technology, it is very likely that other cases with similar fact patterns will find their way through our court system and eventually to the Supreme Court. Until that time, however, we are faced with a discrepancy in circuit court holdings.

One of the most interesting aspects of these cases is the interest and involvement of the American Library Association and the American Association of Law Libraries. These two organizations were among a handful of associations that filed an Amicus Brief with the Supreme Court in support of the position of the National Geographic Enterprises. They argued strongly that a failure to overrule the Greenberg decision would have “profound consequences for the library and archival communities and those who use collective works.” More interestingly they voiced concerns over the possible restrictions on dissemination of collective works via digital and electronic means.

These arguments sound very much like many of the arguments voiced both in favor and against the controversial Google Library Project. It may be that as the Google Library Project issues are resolved, one way or the other, it may help to answer questions for other controversial cases such as the National Geographic cases.

Copyright as it is applied to electronic media continues to be a controversial subject. As technology continues to evolve and our understanding of the scope of copyright protection continues to evolve, we will continue to see controversial copyright cases. Eventually the Supreme Court will hear more of these cases and issues will continue to be resolved. For now, whether an infringement results from the digitization of previously published composition works will depend entirely on the geographic area where the case is filed. For states located in the federal court circuits where no decision has yet been made, the courts could go either way.

Daniels Daniels & Verdonik, P.A. has been serving the legal needs of entrepreneurial and high technology clients for more than 20 years. Caroline Horton Rockafellow is a licensed patent attorney who works primarily in the areas of technology deals and licensing. Questions or Comments can be sent to crockafellow@d2vlaw.com